PTMG Spring Conference Report Tamsin Holman, D Young & Co LLP Pre-Conference Dinner Those who arrived in London during the weekend preceding the conference were treated not only to some unseasonably warm weather (a lovely change from the incessant rain of the previous few months) but also to a superb dinner in the Old Hall of Lincoln’s Inn. The Hall was the perfect setting for Derek Rossitter, PTMG Honorary President to deliver his welcoming speech which was as thought provoking and topical as ever. Savoy Hotel, London, 17th and 18th March 2014 - “Realities in the Realms of Regulation of Pharmaceutical Trade Marks” Day 1 The conference officially commenced at 2.15pm on Monday 17th March, in the sumptuous surroundings of the Savoy Hotel, one of London’s great landmarks. Conference Chair, Sophie Bodet, introduced the PTMG Committee members and extended a warm welcome to everyone. As usual, delegates were Our first speaker, Professor Lionel Bently of Cambridge University, gave the Alan Cox Memorial Lecture. This was a fascinating review of 18th century English case law involving medicines from which Professor Bently traced a number of key principles of trade marks law as we know it today, such as the concept of the average consumer, the protection of colours and shapes as an indication of origin, and exhaustion of rights. Medicinerelated disputes were surprisingly prevalent in this period of history, referred to as the Golden age of Quackery. Indeed, sizeable fortunes were made from the manufacture and sale of preparations such as Dr Johnson’s Golden Ointment, encouraged to suggest any topics of interest for future conferences. Prior to introducing the first speaker, Sophie concluded her opening remarks with a general reflection on the past couple of years and the challenges faced by the pharmaceutical industry as a result of the general economic downturn, record numbers of drugs coming off patent, increasing generic pressure and the need to improve R&D productivity. Sophie Bodet & Derek Rossitter Tipping’s Liquor and Daffy’s Elixir Salutis. At a time of high mortality rates and health problems rife throughout the general population, numerous medicinal products were available. The quality of these was highly variable and only some were developed by doctors. Medicine sellers developed complex distribution systems and fashioned the acts of persuasion and salesmanship. Counterfeiting was rife and advertisements, which frequently warned about the dangers of imitations, educated the public to look for distinctive get-ups, including packaging with signatures, as indicators of genuine products. Copyists who mimicked doctors’ signatures on look-a-like products could be charged with forgery under the laws of the day. A series of common law cases, notably various decisions of Lord Mansfield, also saw the early development of the concepts of Professor Lionel Bently Next, Jamie Rowlands of Wragge & Co delivered the international case round-up focussing on infringement decisions and registry cases from the past 12 months. The first few cases emanated from the UK, starting with Speciality European 7 trade mark infringement and passing off. Until the early 19th century, the available remedies were limited to damages. However, from the 1810’s onwards, the Courts of equity started granting injunctions, which still remains the primary remedy against infringers. Jamie Rowlands On the evening of Day 1, the superb Savoy ballroom, in which the talks had Pharma v Doncaster Pharma, a case concerning the extent to which it was actively necessary for the defendant to rebrand generic trospium chloride to gain market access. Jamie touched next on the English High Court ruling in Merck (MSD) v Merck KGaA, the latest chapter in the two Mercks’ relationship under the long-standing co-existence arrangements between them. Jamie’s focus then moved to a recent decision of the Delhi High Court in Boehringer Ingelheim v Premchand Godha, in which the defendant sought to set aside a preliminary injunction which had been granted to prevent sales of Mucosolvin in India under the law of passing off. The next case, also involving Boehringer Ingelheim, was an appeal to the General Court where the central question in this case was whether the sign RELY-ABLE was sufficiently distinctive to serve as a trade mark for use in relation to clinical trials. The Court held that, although the relevant public would have high levels of attention, they would nevertheless see the sign as a mis-spelling of RELIABLE and the registration therefore failed. We then looked at the Australian case of Ceva Santé Animale, concerning trade marks containing INN stems. The examiner rejected an application to register SYNCROSTIM for a broad range of veterinary products, on the basis that the use of STIM suggested that colony stimulating factors were contained in the products. Jamie then spoke about the New Zealand case of Bayer v DBC. This concerned Bayer’s ELEVIT product, which had a strong reputation in relation to post-pregnancy vitamin supplements for women. DBC applied to register ELEVIN for goods in class 5, including dietary and nutritional supplements. No prescription was required for either parties’ product, but ELEVIN was not suitable to be taken by pregnant women. Following a (rather surprising) first instance finding of no similarity, the decision was reversed on appeal. Finally, Jamie provided a summary of two US cases before the TTAB. The first, being a refusal to permit registration of EPI-KEY, on the basis of likelihood confusion with earlier mark EPI-PEN (Mylan Inc v Beaufort County Allergy). The second case (Chattem Inc v Kirk Seubert) turned on the question of whether there was sufficient similarity between the parties’ respective specifications of goods. The application for ActRx for nutritional supplements was rejected as being too close to the opponent’s earlier mark, Act, for anti-cavity mouthwashes.